DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Claims 27, 29, and 38-39 were withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected groups, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/11/23.
The examiner replied to the traversal in the previous action of 10/2/23 and 1/28/25 and the election/restriction requirement was still deemed proper and was therefore made FINAL.
In addition claims 63, 66-68, 72, and 74 were withdrawn by election by original presentation as directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the new claims are directed to another species/embodiment, different than the originally examined species/embodiment, of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
Since applicant had received an action on the merits for the originally presented invention, this invention had been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 63, 66-68, 72 and 74 were withdrawn from consideration as being directed to a non-elected invention/species. See 37 CFR 1.142(b) and MPEP § 821.03.
The argument that the election by original presentation is only made because the examiner does not want to examine more claims is not persuasive or accurate. The claims, as discussed in the action of 1/28/25, diverged into two (or more) separate, independent, unique, and distinct claimed inventions. For example, one original claim was to a hearing device (e.g. claim 2, etc.) and another newly submitted claim was to a completely opposite device of being “not a hearing device” (e.g. claim 66, etc.). As the examiner searched in areas related to hearing devices (e.g. A61N1/36036, etc.), the search for “not a hearing device” is not in the same area, the claims are recognized divergent subject matter, and/or there is serious search burden on the examiner on these new claims. Therefore, the election/restriction requirement was still deemed proper and was therefore made FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12, 60, 77, and 87 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 12, lines 5-7, the claim is vague as it is unclear if the sensor of non-physiological data and determination is directed to the non-movement data of claim 1, or whether this is an entirely separate way to make the determination.
In claim 60, line 5, “data collection” is vague as it is also used in claim 1. It is unclear if the data collection in claim 60 is the same as used in claim 1 or different. If they are the same, then “the data collection” should be used. If they are different, then a modifier such as “additional data collection” should be used. In the next to last line “EEG data” and “implantable electrodes” are inferentially included and the claim is vague as it is unclear if the EEG data and implantable electrodes are trying to be positively recited/claimed or functionally recited. Claim 1 has only positively recited/claimed that the medical device makes a “determination” or a judgement to whether data collection should be commenced. However, claims 1 and 60 include no further structure or sensor to actually sense physiological data, such as EEG from implantable electrodes. If the claim is meant to positively claim these elements, it is suggested to first state the apparatus “further comprises implantable electrodes to sense an EEG…” before they are further used in the claim. If the claim is meant to functionally recite (i.e. an intended use), then it is suggested to use functional terms, such as “wherein the medical device is configured to receive the physiological data as an EEG from implantable electrodes”.
In claim 77, line 2, “the acoustic probing…provides the non-movement data” is vague as it is unclear how the acoustic probing (e.g. output of sound, etc.) “provides” the non-movement data. Is there some other element that senses/obtains/collects the non-movement data due to the acoustic probing? It is unclear how outputting of sound—i.e. “acoustic probing”—provides the non-movement data. In addition, it is noted that claims 1, 5, and/or 77 have not set forth any element that actually senses/obtains/collects the non-movement data.
In claim 87, the last line, “causes the physiological data that is collected” is vague as claims 1 and 87 contain no element or function for collecting data, but only a function of determining “whether a data collection activity should be commenced”.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 77 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The subject matter which was not described in the original disclosure is the “acoustic probing of the recipient’s body provides the non-movement data”, in combination with the other elements and/or functions of the claim(s).
The original disclosure stated that acoustic probing is applied (e.g. applying a sound signal to the user) and the non-movement data is “obtained based on the active probing” (e.g. para. 91 of the specification). The disclosure did not state the acoustic probing “provides” the non-movement data, but that some element is used to “obtain” the non-movement data. In addition, it is unclear how acoustic probing (i.e. delivery of sound) “provides non-movement data”. The delivery of sound may result in sound that can be picked up by some other sensor, that the other sensor then provides non-movement data, but the probing/sound does not provide data of non-movement.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2, 5, 8, 12, 14, 20, 58, 60-62, 64, 65, 69-71, 73, and 75-86 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) a mental concept of determining whether data should be collected based on an analysis of other non-movement data. This judicial exception is not integrated into a practical application because the combination of additional elements (e.g. medical device [i.e. a standard processor, paras. 171-172, etc. of the specification], and in the dependent claims the use of sensors or “implantable components”, etc.) fails to integrate the judicial exception into a practical application,. The generically recited computer elements (e.g. medical device/processor, “components”, etc.) do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. In addition, the dependent claims use of additional generic components (e.g. a first and/or second sensor, electrode, means for RF communication, conventional hearing aid, etc.) are directed to mere data gathering steps to gather data for the mental concept, and are insignificant extra-solution activity and/or are merely nominal or token extra-solution components of the claim(s) and is nothing more than an attempt to generally link the product to a particular technological environment. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because when considered separately and in combination, the additional elements (e.g. medical device/processor, sensor(s), “implantable component”, electrodes, etc.) do not add significantly more to the exception, and appear to be well-understood, routine, conventional components/computer functions as recognized by the court decisions listed in MPEP 2106.05(d).
The claims are directed to an abstract idea and/or the end result of the system/method, the essence of the whole, is a patent-ineligible concept. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to a general computer performing a calculation. The claims are directed to an abstract idea, i.e. implementing the idea of determining whether data should be collected based on an analysis of other non-movement data, such as may be done by a mental process, critical thinking, and/or paper and pencil, or done by a mathematical equation, with additional generic computer elements, or additional structure (e.g. medical device/processor, sensor(s), implantable component/electrodes, etc.) recited at a high level of generality that perform generic functions routinely used in the art, and do not add a meaningful limitation to the abstract idea because they would be routine in any computer implementation or in the relevant art. Thus, the recited generic computer components perform no more than their basic computer functions. The additional generic elements (e.g. sensors, implantable component/electrodes, means for RF communicating, conventional hearing aid, etc.) are nothing more than an attempt to generally link the apparatus to a particular technological environment. These additional elements are well‐understood, routine and conventional limitations (see cited document(s)) that amount to mere instructions or elements to implement the abstract idea. In addition, the end result of the system/method, the essence of the whole, is a patent-ineligible concept. See the recent decisions by the U.S. Supreme Court, including Alice Corp., Myriad, and Mayo. In addition, the current claims are similar to other recent court decisions dealing with analyzing, comparing, and/or displaying data, such as Electric Power Group, Digitech, Grams, and Classen.
Based on the plain meaning of the words in the claim, the broadest reasonable interpretation of the claims (e.g. claim 1 having a medical device/processor) is a system having a processor, wherein the processor is programmed with executable instructions to perform the calculations/mental process/critical thinking. The claims do not impose any limits on how the non-movement data or physiological data is received by the processor, and thus this step covers any and all possible ways in which this can be done, for instance by typing the information into the system, or by the system obtaining the information from another device. The claim also does not impose any limits on how the computations are accomplished, and thus it can be performed in any way known to those of ordinary skill in the art.
The calculations are simple enough to be practically performed in the human mind or through critical thinking. Note that even if most humans would use a physical aid (e.g., pen and paper, a slide rule, or a calculator) to help them complete the recited calculation, the use of such physical aid does not negate the mental nature of this limitation. Nor does the recitation of a processor in the claim negate the mental nature of this limitation because the claim here merely uses the processor as a tool to perform the otherwise mental process.
The medical device/processor is recited so generically (no details whatsoever are provided other than that it is a standard medical device/processor) that they represent no more than mere instructions to apply the judicial exception on a computer. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
Although the processor or claim limitations may fall under several exceptions (e.g., a mathematical concept-type abstract idea or a mental process-type abstract idea), there are no bright lines between the types of exceptions. See, e.g., MPEP 2106.04(I). Thus, it is sufficient for the examiner to identify that the limitations align with at least one judicial exception, and to conduct further analysis based on that identification.
The limitations of the claims are carried out by the processor. No element has been set forth to sense the non-movement data or physiological data in claim 1. The dependent claims also add additional elements of sensor(s), implantable component/electrodes, means for RF communicating, etc. (in some of the dependent claims), where the processor performs the necessary software tasks so that the result of the abstract mental process is just data/a determination of whether data collection should be commenced. The sensor(s), means for RF communicating, or implantable component/electrodes limitations represents extra-solution activity because they are a mere nominal or tangential addition to the claim. These additional generic components (e.g. a first and/or second sensor, “components”/electrodes, means for RF communicating, conventional hearing aid, etc.) are directed to mere data gathering steps to gather data for the mental concept, and are insignificant extra-solution activity and/or are merely nominal or token extra-solution components of the claim(s) and are nothing more than an attempt to generally link the product to a particular technological environment. See MPEP 2106.05(g), discussing limitations that the Federal Circuit has considered to be insignificant extra-solution activity. Even when viewed in combination, the additional elements in this claim do no more than automate the mental processes (e.g., the mental computation of determining whether data should be collected based on an analysis of other non-movement data, etc.), using the computer components as a tool. While this type of automation may improve the life of a practitioner/physician (by minimizing or eliminating the need for mentally computing metrics), there is no change to the computers and other technology that are recited in the claim as automating the abstract ideas, and thus this claim cannot improve computer functionality or other technology. See, e.g., Trading Technologies Int’l v. IBG, Inc., 921 F.3d 1084, 1093 (Fed. Cir. 2019) (using a computer to provide a trader with more information to facilitate market trades improved the business process of market trading, but not the computer) and the cases discussed in MPEP 2106.05(a)(I), particularly FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (accelerating a process of analyzing audit log data is not an improvement when the increased speed comes solely from the capabilities of a general-purpose computer) and Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir. 2017) (using a generic computer to automate a process of applying to finance a purchase is not an improvement to the computer’s functionality). Accordingly, the claim as a whole does not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception.
Note that claim 87 is not included in this rejection as the claim actively uses additional elements to incorporate the mental concept/abstract idea into a complete system by providing feedback/evoking a hearing precept based upon a determination that data should be collected.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 12, 14, 20, 60, 62, 64, 65, 69-71, 73, 75-76, 78-80, and 83-85 are rejected under 35 U.S.C. 102a1 as being anticipated by Morikawa et al (9232904). Morikawa meets the claimed limitations as follows:
--a medical device/hearing prosthesis that determines when to initiate and provide acoustic sound/probing to the body (e.g. title, abstract, figure 3, element 100, col. 3, figure 19, element 110, etc.; for claim 20, determining when to initiate the probing, figure 19, elements 101b and c, col. 26, lines 12-44, etc.),
--configured to determine whether physiological EEG sensor data collection should be automatically commenced (e.g. figures 3/19, element 4, col. 11, lines 40-62, figure 7, s40, etc.) using the EEG sensor/monitor of the brain/organ to collect the data (e.g. element 5, figures 3/19, col. 12, lines 42-52, etc.), and
--the determination based on non-movement data, such as non-physiological sensor data or an acoustic sensor providing acoustic data, where the data is the variable intensity/attribute of the sound environment impinging on the body of the user or the state of the user/recipient (e.g. figures 3/19, element 2 for the sensor, col. 11, lines 20-50, sound pressure environment impinging on the body, a silent non-sound environment state or non-silent state—col. 15, lines 65-67, etc.), the medical device evaluates the variable intensity of the sound environment of the user to determine the state of the user and if the data collection should be commenced (e.g. a silent non-sound state or a non-silent state, figures 3/19, elements 3 and 4, col. 11, lines 40-62, col. 14, lines 3-8, col. 15, line 3-col. 16, line 22, etc.) and for claim 60/79 to commence when the sound is below a level (e.g. col. 17, lines 33-67, collected in each category based on the sound being below a level for each category, figure 11A, col. 16, lines 49-60, etc.). For claim 71, the acoustic sensing of the body is passive and the device has determined to initiate this passive sensing since the device does start the sensing (e.g. figure 7, “Start”, “collect ambient sound”, etc.).
Note for claims 60 and 79, the claim does not positively recite the physiological data or implantable electrodes and only needs to be capable of receiving these values. Morikawa specifically discloses this capability as his recording of the EEG data can be from received EEG data, such as implantable electrodes (e.g. col. 12, lines 8-11, in the alternative, see the 103 rejection below).
For claim(s): 78, first sensor and second sensor (e.g. figures 3 and 6, elements 5 and 2, respectively, etc.); 80 and 84, non-movement data being a variable body attribute (e.g. element 2, etc.) and EEG from implantable electrodes (e.g. figures 3/19, element 2 for the sensor, col. 11, lines 20-50, sound pressure environment impinging on the body, a silent non-sound environment state or non-silent state—col. 15, lines 65-67, etc.) and EEG data (e.g. element 5, etc.); 83, spectrum or fluctuation of environmental sound (e.g. figures 3/19, element 2 for the sensor, col. 11, lines 20-50, sound pressure environment impinging on the body, a silent non-sound environment state or non-silent state—col. 15, lines 65-67, etc.); 85, conventional hearing aid (e.g. figures 19, 20, col. 1, lines 15-20, etc.).
Claims 78, 81, 82, 83, 84, 86, and 87 are rejected under 35 U.S.C. 102a1 as being anticipated by Carter et al (2017/0304632). Carter meets the claimed limitations as follows:
--a medical device (e.g. title, abstract, figures 1-3, etc.), configured to determine, based on non-movement data associated with the patient (e.g. abstract, para. 6, acoustic sound, etc.), whether a physiological data associated with the patient should be commenced (e.g. abstract, para. 6, ECoG measurement, etc.) where the system has a
--first sensor for the physiological data (e.g. ECoG sensor, element 11B, etc.)
--second non-movement data sensor (e.g. acoustic sound, microphone, 208, etc.).
For claim(s): 81, hearing prothesis with an implantable electrode configured to evoke a hearing percept (e.g. figure 2, element 140, etc.); 82, partially implantable hearing prothesis (e.g. figures 1A, 1B, 3A, 5, etc.) with implantable electrode to collect the data (e.g. para. 22, etc.); 83 and 84, the non-movement data being a spectrum or fluctuation of environmental sound (e.g. variable sound pressure environment impinging on the body measured by the acoustic sensor, paras. 21-22, etc.); 84, first sensor for the non-movement data of a variable body attribute (e.g. acoustic sound pressure environment impinging on the body, microphone, 208, etc.) and physiological data of an organ (e.g. ECoG sensor, element 11B, etc.); 86, means for transcutaneously communicating RF data (e.g. paras. 30, 39, 62, etc.); 87, automatically upon a determination that the data collection activity should be commenced, evoke a hearing percept that causes the physiological data to be collected (e.g. abstract, paras. 6, 21, etc.).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Morikawa et al in view of Dillon et al (7889879). Morikawa discloses the claimed invention for assisting in fitting a person using a hearing prothesis, but does not disclose it being used for sensing phenomenon indicative of movement to determine whether data collection should commence. Dillon teaches a hearing prothesis uses sensing of a phenomenon indicative of movement, by sensing the operation of a switch by the user, to determine when to record the user’s acoustic environment (e.g. col. 15, lines 38-65, col. 19, lines 4-11, etc.). It would have been obvious to one having ordinary skill in the art at the time the invention was made/before it was effectively filed to have modified the system and method as taught by Morikawa, with the hearing prothesis sensing a phenomenon indicative of movement by the user to determine whether data collection should commence, as taught by Dillon, since it would provide the predictable results of ensuring that the acoustic environment is recorded when then patient makes adjustments to the hearing prothesis, so that a physician or the device itself can later go over and process the data.
Claims 5, 58, 61, 77, 81 and in the alternative 60 and 79, are rejected under 35 U.S.C. 103 as being unpatentable over Morikawa et al in view of Lunner et al (2018/0014130). Morikawa discloses the claimed invention for assisting in fitting a person using a hearing prothesis, having acoustic probing of the patient (e.g. figure 19, element 101c) and sensing the EEG (e.g. element 5, etc.) but does not disclose the hearing prothesis being used for/in an implantable device, such as using an implantable acoustic component to provide the probing (e.g. claims 5, 77, 81, etc.), an implantable acoustic transducer to sense the non-movement data (e.g. claims 58, etc.), and implantable electrodes for sensing the EEG (e.g. claims 60, 61, 79, etc.). Lunner teaches that when using a hearing assistance system, it can have a variety of implantable or external components, such as being all implantable (e.g. paras. 24, 47, 61, etc.) for delivering the acoustic probing, sensing the acoustic signal, and/or sensing the EEG signal, to allow the physician flexibility to configure the system based on the patient, provide a fully implantable system so as to be unobtrusive, and provide fitting of the system. It would have been obvious to one having ordinary skill in the art at the time the invention was made/before it was effectively filed to have modified the system and method as taught by Morikawa, with the hearing prothesis being used for/in an implantable device, such as using an implantable acoustic component to provide the probing, an implantable acoustic transducer to sense the non-movement data, and implantable electrodes for sensing the EEG, as taught by Lunner et al, since it would provide the predictable results of allowing the physician flexibility to configure the hearing system based on the patient and their condition, providing a fully implantable system so as to be unobtrusive, and/or allowing fitting of other types of hearing protheses such as implantable cochlear stimulators while recording data for processing.
Claims 82 and 86, are rejected under 35 U.S.C. 103 as being unpatentable over Morikawa et al in view of Lunner et al (2018/0014130). Morikawa discloses the claimed invention for assisting in fitting a person using a hearing prothesis and communicating data to a remote shop (e.g. col. 25, lines 55-67, etc.), having acoustic probing of the patient (e.g. figure 19, element 101c) and sensing the EEG (e.g. element 5, etc.) but does not disclose the hearing prothesis being used for/in a partially implantable device and having means for transcutaneously communicating RF data. Lunner teaches that when using a hearing assistance system, it can have a variety of implantable or external components, such as being partially implantable (e.g. paras. 24, 47, 61, etc.) for the hearing prosthesis and using means for transcutaneously communicating RF data (e.g. paras. 269, 172, 63, etc.) to allow the physician flexibility to configure the system based on the patient and provide data to wirelessly to different components and the physician to enable fitting of the system. It would have been obvious to one having ordinary skill in the art at the time the invention was made/before it was effectively filed to have modified the system and method as taught by Morikawa, with the hearing prothesis being used for/in a partially implantable device and having means for transcutaneously communicating RF data, as taught by Lunner et al, since it would provide the predictable results of allowing the physician flexibility to configure the hearing system based on the patient and their condition so as to use external and internal components and , providing a fully implantable system so as to be unobtrusive, and/or providing data wirelessly to different components and the physician to enable easy fitting of the system.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Restriction: The response repeats arguments that were previous argued and are not persuasive. The examiner has used “form paragraphs” made by the USPTO, that are in the MPEP, and used by the USPTO and examiners for over a decade. It is unclear why the attorney thinks 37 CFP 1.475(b) is not addressed. The restriction specifically put forth the 5 categories. The question is, did/do the claims meet one of the 5 categories presented? No. The claims were to an apparatus, a different system, and a method. That is why a restriction was made and the restriction of 5/11/23 specifically notes that the claims are “not so linked…”. In addition, the examiner addressed the other arguments above in the “Election/Restrictions” section.
While the attorney and applicant state that “we are provided answers that we do not consider responsive in a manner that meets the…(APA)”, that statement does not appear to correspond to the official record.
The argument that from the CFR there is a default presumption of unity of invention is not persuasive and not based on fact. There is a presumption of unity under only certain circumstances, “if the claims are drawn only to one…”.
35 USC 101: The applicant/attorney argued that the USPTO management has told its examiners to stop applying 101 rejections based on mental concept/abstract idea. This is not persuasive as the USPTO has only stated in certain circumstances should the 101 not be applied, which this application does not fall under. In addition, the examiner must follow the US Supreme Court rulings such as the Alice Corporation decision which specifically said in 2014 to apply 101 rejections.
A summary: “Alice Corporation holds patents that disclose a scheme for mitigating “settlement risk,” i.e., the risk that only one party to an agreed-upon financial exchange will satisfy its obligation. The patent claims are designed to facilitate the exchange of financial obligations between parties, using a computer system as a third-party intermediary. The patents claim: a method for exchanging financial obligations; a computer system configured to carry out that method; and a computer-readable medium containing program code for performing that method. CLS, a global network that facilitates currency transactions, challenged the claims as not infringed, invalid, or unenforceable. Alice counterclaimed infringement. After the Supreme Court’s decision in Bilski, the district court held that the claims were ineligible for patent protection under 35 U.S.C. 101. The Federal Circuit and a unanimous Supreme Court affirmed. Section 101, which defines the subject matter eligible for patent protection, contains an implicit exception for laws of nature, natural phenomena, and abstract ideas. In applying the exception, patents that claim the building blocks of human ingenuity, which are ineligible for patent protection, must be distinguished from those that integrate the building blocks into something more, making them patent-eligible. The claims at issue are directed to a patent-ineligible concept: the abstract idea of intermediated settlement, which is “‘a fundamental economic practice long prevalent in our system of commerce.” The method claims, which simply require generic computer implementation, fail to transform that abstract idea into a patent-eligible invention. Stating an abstract idea, adding the words “apply it with a computer,” simply combines two steps, with the same deficient result. Taking the claim elements separately, the functions performed by the computer at each step are purely conventional: creating and maintaining “shadow” accounts, obtaining data, adjusting account balances, and issuing automated instructions. They do not purport to improve the functioning of the computer itself or improve any other technology or technical field. The system claims are no different in substance from the method claims, reciting a handful of generic computer components configured to implement the same idea.”
The claims at issue recite a generic “medical device”/computer. Computers can be grasped, are medical devices, and the specification discloses the medical device as a generic computer/processor (e.g. paras. 171, 172, etc.). However, the US Supreme Court states these grasped elements fall under 101. Abstract idea it is.
35 USC 112a: The arguments are not commensurate in scope to the 112a rejection and do not address the specifics pointed out in the rejection. How does the disclosure teach that the acoustic probing of the recipient’s body provides the non-movement data?
35 USC 112b: The arguments are not commensurate in scope to the 112b rejections and do not specifically point out what is meant by the claims for each rejection.
35 USC 102a1: The applicant/attorney does not specifically point out what claimed elements are not in Morikawa, what claimed elements are not pointed out in the rejection, and/or why the Morikawa rejection does not meet the claimed limitations, and therefore the rejection still stands.
35 USC 103. The attorney argues that since the 102 rejection is not valid/correct, that the 103 rejection should be withdrawn. This is not persuasive as the 102 rejection as discussed above is still valid.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to George Robert Evanisko whose telephone number is (571)272-4945. The examiner can normally be reached M-F 8AM-5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Klein can be reached on 571-270-5213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/George R Evanisko/Primary Examiner, Art Unit 3792 6/12/26
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